Coach Services, Inc.v.E&D Trading, Inc.

Trademark Trial and Appeal Board

Aug 7, 2013

No. 91203818 (T.T.A.B. Aug. 7, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Coach Services, Inc.
v.
E&D Trading, Inc.
_____
Opposition No. 91203818
_____
Jean Clemente, Esq. for Coach Services, Inc.

Helen B. Jiang of Law Office of Helen B. Jiang for E&D Trading, Inc.
_____

Before Holtzman, Cataldo, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

E&D Trading, Inc. (“applicant”) filed an application to register the trademark
shown below:

for the following goods:

Cases for eyeglasses and sunglasses; Cases for spectacles
and sunglasses; Chains for spectacles and for sunglasses;
Eyewear, namely, sunglasses, eyeglasses and ophthalmic
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frames and cases therefor; Eyewear, namely, sunglasses,
optical frames, reading glasses; Frames for spectacles and
sunglasses; Lenses for sunglasses; Nose guards which can
be worn by attachment to eyewear such as sunglasses and
ski goggles; Spectacles and sunglasses; Sunglass chains
and cords; Sunglass lenses; Sunglasses; Sunglasses and
spectacles, in International Class 9.1
Coach Services, Inc. (“opposer”) opposed registration of the mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, as used in connection with applicant’s goods, so resembles
opposer’s two previously used and registered marks shown below as to be likely to
cause confusion, mistake or deception. Opposer has pleaded ownership of six U.S.
registrations of the following mark, as set forth in the margin:2

Opposer has pleaded ownership of one registration of the following mark:3

Applicant’s answer consists of a general denial of the allegations in the notice of
opposition.

1 Application Serial No. 85277491, filed on March 25, 2011 under Trademark Act § 1(a), 15
U.S.C. § 1051(a), claiming January 15, 2011 as the date of first use and February 28, 2011
as the date of first use in commerce.
2 Reg. No. 2832589, issued on April 13, 2004; Reg. No. 3695290, issued on October 13, 2009;
Reg. No. 2822318, issued on March 16, 2004; Reg. No. 2822629, issued on March 16, 2004;
Reg. No. 2592963, issued on July 9, 2002; Reg. No. 2626565, issued on September 24, 2002.
3 Reg. No. 3396554, issued on March 11, 2008.
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The parties stipulated that, in lieu of taking trial testimony or discovery,
each may rely on affidavits, declarations, any documents annexed thereto, and
notices of reliance as evidence in this proceeding.4 The parties also agreed to
proceed under the “stipulated record and trial briefs” model of Accelerated Case
Resolution.5 See TBMP § 702.04(d) (3d ed. rev. 2012). In connection with such
agreement, the parties stipulated that:
(a) Opposer has standing to bring this opposition;

(b) Opposer has priority of use of its pleaded marks;

(c) The goods of the parties are identical and otherwise similar for
purposes of likelihood of confusion.6

The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for applicant’s mark. The record also
includes the following evidence submitted by opposer:
1. Four notices of reliance upon the following documents:
No. 1: Copies of seven certificates of registration of opposer;
No. 2: File of opposer’s Application Serial No. 76348453;
No. 3: File of opposer’s Application Serial No. 77687107;
No. 4: File of applicant’s involved application.

4 Stipulation filed October 8, 2012.
5 Board order of October 30, 2012 (cited herein as “Stipulation Order”).
6 Id. The Board commends the parties for their utilization of Accelerated Case Resolution
(ACR) and the efficiencies realized thereby.
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2. Affidavit of Jean Clemente, counsel to opposer and to Coach, Inc., with
attachments thereto:
Attachment I: Website visitor numbers;

Attachment II: (not of record);7

Attachment III: Copies of seven registration certificates of opposer
(duplicative of notice of reliance No. 1);

Attachment IV: Advertisements for marked goods of opposer;

Attachment V: Sales figures for marked goods of opposer;

Attachment VI: Advertisements for marked eyewear of opposer;

Attachment VII: Sales figures for marked eyewear of opposer.

Opposer has filed its brief. Applicant has filed neither a brief nor any
evidence.
Evidentiary Matters
Pleaded Registrations.
Opposer has filed, with its notice of reliance No. 1 and as Attachment III to
the Clemente affidavit, copies of its seven pleaded registrations as originally issued.
These copies do not set forth the current status or title of the registrations. The
parties have stipulated that all documents attached to an affidavit or notice of
reliance “will be admissible as evidence and may be relied on by either party.”8
However, the documents provided by opposer do not establish opposer’s current
ownership or the current status of the registrations. The parties have stipulated to

7 Attachment II refers the Board to the website for a copy of opposer’s 2012
SEC Form 10-K. Such a reference is not sufficient to make this material of record.
8 Stipulation Order, item 6.
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opposer’s “priority of use of its pleaded marks,”9 but not to opposer’s ownership of
registrations. The proper method for establishing the ownership and status of a
registration is to file:
(a) a copy of the registration prepared and issued by the
Office showing both the current status of and current title
to the registration; or (b) a current printout of information
from the electronic database records of the Office such as
(i) TSDR (Trademark Status and Document Retrieval)
showing the current status and title (owner) of the
registration and, if the TSDR printout does not reflect the
current owner of the registration, a printout from the
Office’s Assignment database demonstrating an
assignment to the current owner of the registration; or (ii)
TESS (Trademark Electronic Search System) along with a
copy of any records from the Assignment database
showing an assignment to the current owner of the
registration.
TBMP § 704.03(b)(1)(A); see also 37 C.F.R. § 2.122(d)(2); Citigroup Inc. v. Capital
City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB 2010), aff'd, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011).
The “Status” and “Current Owner(s) Information” sections of the TSDR
record contain information regarding the maintenance and renewal of the
registration and the current ownership of the registration. Similarly, the TESS
record sets forth ownership and maintenance information. To the extent that either
of these records is not up-to-date, the rules require additional evidence from the
Assignment records of the Office. The documents filed by opposer lack such current
information and are not sufficient under 37 C.F.R. § 2.122(d)(2) and TBMP §
704.03(b)(1)(A). Accordingly, although the copies of the original registration

9 Id., item 3.
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certificates are in evidence, they do not sufficiently establish the current ownership
or status of the registrations.
The Clemente Affidavit.
The Clemente affidavit sets forth information relating to use of opposer’s
pleaded marks not by opposer but by an entity called Coach, Inc. Although the
affidavit and opposer’s brief appear to assume that there is a relationship between
Coach, Inc. and opposer, there is nothing in the record to explain what that
relationship may be. If the Clemente affidavit were necessary to establish opposer’s
priority of use of its marks or the nature of opposer’s goods, it would be inadequate
to do so. However, these two issues have been addressed by stipulation of the
parties. To the extent that the affidavit addresses other matters at issue in this
proceeding (and we note that opposer’s claim of fame is entirely dependent on the
affidavit), it leaves unanswered the question of how activities of Coach, Inc. could
inure to the benefit of opposer. In order to ensure that opposer’s claims receive a
full hearing, we have considered the Clemente affidavit, with the caveat that its
relevance to opposer is uncertain. We note that, even if we were to interpret the
Clemente affidavit as if it related to opposer in all ways, doing so would not alter
our ultimate decision in this matter,
Standing and Priority
The parties have stipulated that opposer has standing to bring this
opposition; and that opposer has priority of use of its pleaded marks.10 Accordingly,

10 Id., items 2 and 3.
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we consider opposer’s standing and priority to be established without more
evidence.
Likelihood of Confusion
We consider next whether applicant’s mark is likely to cause confusion with
opposer’s pleaded marks under Trademark Act § 2(d). As opposer’s ownership of its
pleaded registrations has not been established, opposer must initially prove that it
owns “a mark … previously used in the United States... and not abandoned...”
Trademark Act Section 2(d), 15 U.S.C. § 1052(d). We take the parties’ stipulations
as establishing that opposer “has priority of use of its pleaded marks” for goods that
are “identical or otherwise similar” to those of applicant. The Clemente affidavit
corroborates that opposer’s rights in its marks extend to the field of eyewear:
10. … the Signature C Design11 has been used on
eyewear since Coach first expanded into the eyewear
market. Coach’s direct sales in the eyewear market
exceed forty-one million dollars (US$41,000,000).
11. The Signature C design is featured prominently on
many models of eyewear, among them “Hayley”, “Brand”,
“Aubree”, “Joelle”, “Carla”, and “Pamela.” …
12. In 2012, the yearly sales of Signature C marked
eyewear in the United States was one million eight
hundred thousand dollars (US $ 1,800,000). …
Although the Clemente affidavit does not address when opposer’s marks were first
used on eyewear, opposer’s priority is established by stipulation.

11 Opposer often refers to its two registered marks in the singular, as if they were two
versions of one basic mark (presumably the one shown in Reg. No. 3396554). Opposer’s
brief refers to this basic mark as the “CC Logo trademark”; the Clemente affidavit refers to
it as the “Signature C Design.”

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Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion, as set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and/or services at issue. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In the case
before us, opposer has also presented evidence and arguments as to the fame of its
marks, the parties’ customers and the parties’ trade channels.
Goods; Trade Channels; Customers.
That the goods of the parties are identical or similar has been established by
stipulation. There is also evidence showing that opposer has sold sunglasses under
the mark,12 confirming that the parties’ goods are, in fact, identical at least in part.
To the extent that the parties’ goods are identical, we must presume that they move
through the same channels of trade and are offered to the same classes of
customers. See American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Accordingly, the three du Pont factors
relating to the similarity or dissimilarity of the goods, the trade channels, and likely
customers favor a finding of likelihood of confusion.

12 Clemente affidavit ¶ 10-11 and Attachment VI; opposer’s notice of reliance No. 3,
specimen of use.
Opposition No. 91203818

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The Fame of Opposer’s Marks.
Opposer maintains that its marks are famous and argues that “[T]here is no
excuse for even approaching the well-known trademark of a competitor … all doubt
as to whether confusion, mistake, or deception is likely is to be resolved against the
newcomer, especially where the established mark is one which is famous…”
Opposer’s brief at 5, quoting Nina Ricci S.A.R.L. v. E.T.F. Enters., 889 F.2d 1070,
1074, 12 USPQ2d 1901 (Fed. Cir. 1989). Fame, if it exists, plays a dominant role in
the likelihood of confusion analysis because famous marks enjoy a broad scope of
protection. A famous mark has extensive public recognition and renown. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). Because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal protection it receives
and the dominant role fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting that its mark is famous to clearly prove it. Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer’s demonstration of fame rests primarily on evidence of strong sales
of its goods and extensive advertising and marketing expenditures, as set forth in
the Clemente affidavit.13 Ms. Clemente, in her affidavit, testifies that opposer’s

13 We reiterate our caveat that the relevance of the Clemente affidavit to opposer is
questionable; but for purposes of opposer’s argument of fame we read the affidavit as if it
applies to opposer. If we did not do so, the relevance of the affidavit to the case before us
Opposition No. 91203818

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“Signature C Design is a world-renowned design, synonymous with quality”; that it
was first used in 2000 on handbags and other goods; and that in 2012 opposer
expended $89.2 million on consumer communications relating to the mark, and
$245.2 million on advertising, marketing and design costs.14 Ms. Clemente states
that the Signature C Design “features heavily” on opposer’s internet web site, which
received over 45 million visits from persons residing in the United States from July
2011 to May 2012.15 She states that opposer offers for sale over 200 different
products under the mark, which is “arguably my Company’s most famous
trademark”;16 that worldwide sales under the mark exceeded $4 billion in both 2011
and 2012; and that U.S. sales under the mark in 2012 were $1.5 billion.17 Annual
sales under the mark in the U.S. in 2008 to 2011 ranged between $1.1 billion in
2010 and $1.5 billion in 2008.18 She states that in 2012, sales of eyewear under the
mark were $1.8 million.19 Sales of marked eyewear in the U.S. in 2008 through
2011 ranged between $6.9 million in 2010 to $2.3 million in 2008.20
A showing of sales and advertising expenditures relating to marked goods
over a substantial period of time is a valid way of indirectly demonstrating the

would be so uncertain that we would have to conclude that opposer has made no showing of
fame or public recognition.
14 Clemente affidavit ¶ 6.
15 Id. ¶ 5 and Attachment I.
16 Id. ¶ 8.
17 Id. ¶ 9 and Attachment V.
18 Id., Attachment V.
19 Id. ¶ 12 and Attachment VII.
20 Id., Attachment VII.
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mark’s fame. Bose, 63 USPQ2d at 1305-1306 and 1309. However, opposer’s
showing is somewhat limited in scope. Opposer provides no commercial context for
its raw statistics, such as evidence of how opposer’s sales and marketing
expenditures compare to others in its industry, or evidence of opposer’s market
share. Opposer also provides no evidence of actual consumer recognition of
opposer’s marks. We find that opposer’s evidence of vigorous promotion of its marks
and sales of goods under them weighs in favor of a finding of likelihood of confusion.
However, it is insufficient to demonstrate actual fame or an objectively high level of
customer recognition.
The Marks.
We turn next to address the similarity or dissimilarity of the parties’ marks
(shown below) in terms of appearance, sound, meaning, and overall commercial
impression.

Applicant’s mark consists of the stylized, lower-case letters DP and would
likely be perceived as such by typical customers. To the extent that these letters
have meaning, that meaning would differ from the meaning of opposer’s marks,
which consist of the repeated letter C displayed in various orientations. If
applicant’s mark were pronounced, the most likely pronunciation would be “DP.” It
is doubtful whether opposer’s marks would be pronounced, but if they were they
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would most likely be pronounced “C” or “CC” or “CCCC.” Accordingly, to the extent
the marks would be pronounced, their pronunciations would differ substantially.
Opposer argues, however, that when the marks are viewed as designs, rather
than letters, they are “substantially identical” and “strikingly similar.” Opposer
argues that both applicant’s mark and opposer’s marks
use two joined letters to create a circular aesthetic.
Further, in Coach’s CC Logo trademark, the sides of the
joined C’s are emphasized and are much fuller than the
top or bottom of the C’s. The DP Design uses a similar
design where the sides of the “d” and “p” are also
disproportionally accentuated and the top and bottom are
slender.
Opposer’s brief at 7.
Opposer urges us to consider applicant’s mark alongside a cropped version of
opposer’s marks that shows only two C’s facing each other in mirror image, thus:

However, the cropped version of the opposer’s marks was not pleaded by opposer
and there is no evidence that opposer has ever used its marks in this cropped form.
Rather all of the evidence of record indicates that opposer uses its marks in forms in
which there are not only four C’s or eight C’s (i.e., the forms of the two pleaded
marks), but rather as a repetitive pattern that covers large surfaces of the goods
with innumerable iterations of the marks. See Clemente affidavit, Attachment IV;
and notice of reliance No. 3 (specimen of use). Opposer argues further:
Since the dominant and the most significant identifying
part of these two marks is the circular formation created
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by the joined letters, the difference of the small stems
coming off the lowercase “d” and “p” are minor,
particularly when the stems of the “d” and the “p”
disappear into the overall design, and the consumer is left
with the impression of two circles. Consequently, the
difference between the marks in overall appearance is
negligible. Likelihood of confusion could be even further
compounded if E&D used its DP Design in repeat on a
product or packaging. … A customer could easily be
confused by seeing the DP design used in repeat in such a
manner.
Opposer’s brief at 7-8.
While we perceive some similarity in the oval shapes of which the marks of
applicant and opposer are formed, we are not persuaded that the marks are highly
similar in appearance. Opposer’s two pleaded marks consist, respectively, of four
and eight oval shapes, some oriented vertically and some oriented horizontally.
Applicant’s mark consists only of two horizontally oriented ovals. Moreover,
applicant’s mark clearly appears to consist of the lower-case letters DP, and the two
letters are separated from each other rather than conjoined; by contrast, in
opposer’s marks the unusual orientations and reversals of the letter C transform
the marks into something that is visually distinct from a mere repetition of the
letter C. Thus, while applicant’s mark has the character of a combination of letters,
opposer’s marks have the character of abstract designs, albeit composed of
iterations of the letter C in various orientations and reversals. While opposer
might, in another context, have occasion to object to any use by applicant of its
mark as a repeating pattern, that issue is not before us because applicant does not
seek to register a repeating pattern mark. Moreover, there is no evidence that
applicant has ever used its mark as a repeating pattern. See opposer’s notice of
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reliance No. 4, showing a sample of applicant’s goods with the mark displayed in
large format on the temple of a pair of eyeglasses. Overall, we find applicant’s mark
to be dissimilar in appearance, meaning, sound, and overall commercial impression
from opposer’s pleaded marks.
Balancing the Factors
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find the dissimilarity of the
marks to be dispositive of this case. Kellogg Co. v. Pack’em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a
particular case, a single duPont factor may not be dispositive.”) We find that
applicant’s mark, as applied to applicant’s goods, is not likely to give rise to
confusion, mistake or deception as to the source of applicant’s goods.
Decision: The opposition is dismissed.